Signs that cannot be protected as a Trade Mark

A trade mark search is the most important preparatory step that can be taken ahead of filing atrade mark application. and launching a brand. However, a clear search result does not always guarantee a successful application.

Common text or images

A trade mark application attempting to register commonly used words, text or images is often = a red flag. An application filing for words or images that other businessess may legitimately want to use to describe or present their own goods or services is likely to be rejected on these grounds. A registered trade mark is aimed ataims to protecting the unique branding elements created by an applicant, but must not be to the detriment of other businesses seeking to fairly market their own goods or services.

Common signs

Signs can be any text or image that can represent the applicant's goods or services. Such signs can be considered common if the text or image is typically used to describe the goods or services that are being protected. Examples of common signs are:

Signs indicating the kind of goods or service represented by the trade mark, for example:
- Vita B Complex for vitamin tablets containing vitamin B12, vitamin B6, riboflavin and folic acid
- Analytics for data analytical services
- An image of a shirt for cotton and wool shirts
Signs indicating the quality of goods or service represented by the trade mark, for example:
- Waterproof for water-resistant jackets
- Trending for news program services
Signs indicating a quantity or a specific quality in the goods or services of the mark, for example:
- 24K for jewelry containing gold
- 365 Gigapixel for photography services
Signs indicating the intended purpose of the goods or service, for example:
- SaveData for thumb drives
- AcneClear for dermatological services

A generic word, combination text or a symbol may be deemed as being distinctive where it is combined with text or a symbol that can make the combination less generic. For example, For example the brand name ‘Hot Chocolate’ combined within a highly distinctive logo mark, may be found to be distinctive overall.

Geographical names

Geographical names on a trade mark application can craete a problem for the applicant, specifically when the geographical name is known to be linked with a particular product or service. Examples of such names are Sunraysia for grapes or Queensland for mangoes.

An applicant may be compelled to defend the use of a geographical name to successfully register the trade mark. A geographical name may be accepted as a trade mark if the applicant can show that:

the name has been used in trade to significant extent; and
the public recognises the otherwise geographical name as a trade mark.

Common surnames

Business names with the surnames of the business owner are not rare. It is also a recommended practice to apply for a trade mark to protect the business name. A common surname in Australia, however, can pose a problem for the trade mark application. This is because there will be many people who may want to use the surname as part of their business or as part of their product or service name. Examples of common Australian surnames are Taylor, Smith, or Miller.

As in the case of geographical names, the applicant may submit an evidence of use report to show that the surname has been used and is recognised as a trade mark to defend the use of a common surname in the applicant's trade mark.

Prohibited text or images

A trade mark application, on the other hand, may avoid commonly used text or image but still be rejected because it contains prohibited content. Of particular concerns are the following:

Class 36 restricted words

It is not unusual to see trade mark applications denied due to using commonly used words, phrases, or images. Banking and financial services have their own restricted terms when it comes to applying for trade marks.

Class 36 services and other numerous words associated with these industries are restricted:

Insurance
Financial affairs
Monetary affairs
Real estate affairs

Some examples of terms that are not allowed for use in trade marks, other than closely related expressions, are:

ADI / Authorised Deposit-Taking Institution
Bank / Banker / Banking
Building Society
Credit Society
Credit Union
Friendly Society

The term is not allowed for use, even if the term is part of another word or phrase. Examples of these may be BankBook or Friendly Society Lending Agency. Exceptions are given to the acronym ADI where ADI may be contained in words like Circadian, Dyadics, or Palladium.

The Australian Prudential Regulatory Authority (APRA) regulates the use of these restricted terms. The Act also points to a few exceptions: the Reserve Bank does have the rights to use bank, banker and banking, whereas an authorised deposit-taking institution may use the term banking. Section 66A of The Banking Act 1959 sets constraints on individuals, not ADIs, using the expression authorised deposit-taking institution or ADI in connection to financial businesses. As a rule, APRA only allows authorised financial institutions to apply for trade marks using the restricted terms.

This Act does not prohibit the use of ADI in common words, like traditional or steadily for example. Under Life Insurance Act 1995, the APRA may abolish consent for an organisation to use a term or phrase related to financial businesses and determines if a specific word or expression is considered restricted.

The Life Insurance Act 1995, section 16E, established the restriction on the use of the expression “friendly society.” A friendly society is a mutual association providing sickness benefits, life insurance and pensions. The phrase is restricted under several conditions:

when used in connection with a financial institution;
if the organisation is not a friendly society; and
if the APRA did not approve the use of the phrase.

The APRA is an Australian government establishment that regulates and supervises banking, insurance, superannuation, and financial services. The authority may revoke an association's right to use the expression at any time, even after consent is given.

If you, as an applicant, are not part of the list of authorised financial institutions, you may contact APRA for permission to use a restricted terms. Once an approval is secured, you may include this documentation in your trade mark application.

AU TM# 1568304 is a good example of a trade mark that was not accepted for registration for containing restricted words, like bank and banking. The trade mark was filed on 11 July 2013 for the words “YOURS & MINE BANK BANKING WITH INTEGRITY” and was registered for class 36 services. AU TM# 1092343 was for the words “Your significant other bank” and was originally accepted for registration in May of 2006. The application was removed from the register for not being renewed. This is a good example of a trade mark for class 36 services that was accepted and also contains the word bank.

AU TM# 499895 is a registered trade mark for services under class 36. The mark is for the words “THE OVER 50'S FRIENDLY SOCIETY” and an image containing the same words on the cover of an open book. The mark is still on the register with a renewal date of 18 November 2019. By contrast, AU TM# 442226 for the phrase “STATEGUARD FRIENDLY SOCIETY” and a circular image containing the same phrase was never registered.

Article 6ter prohibited signs

Article 6ter of the Paris convention was established to protect the emblems and armorial signs of its member states. The scope of protection outlined in Article 6ter includes:

Armorial bearings;
Flags;
State emblems; and
State official signs and hallmarks.

Under Article 6ter, a member state must:

refuse to register a trade mark that consists of or contains a notified sign as well as any trade mark that has a certain similarity to a notified sign;
invalidate any registrations for trade marks that consist of or contain notified signs;
provide effective means to stop unauthorised use of notified signs;
extend protection to the flags of the member states regardless of whether they have been notified;
if they intend not to extend protection to a notified sign, communicate such an intention within 12 months of notification;
make a list of those signs that have been notified available to the public.

Scandalous trade marks

Under Section 42 of the Trade Marks Act 1995, a trade mark application must be rejected if (a) the elements of the trade mark include scandalous material. However, what constitutes scandalous material is not elaborated in the act. The definition may be too broad or too subjective and thus is usually decided on a case-by-case basis.

In general, trade marks that are considered scandalous are those that include profanity, religious iconography and connotation, overt sexual content or innuendo and racial slurs, as well as those that incite violence and terrorism and promote criminal activity.

However, several previous rulings in the Australian courts (such as in the case of POMMIEBASHER, which the examiner deemed to be a colloquialism rather than an invective), seem to indicate that scandalous trade marks are seen being different to trade marks that are merely in poor taste.